Global economic concerns have caused technology based companies to become more cost conscience and set cost savings goals. While technology companies are doing everything they can to reduce costs, they still wish to obtain strategic international patent protection without compromising the quality of their patent portfolio. Unfortunately, balancing these two objectives has been very difficult to do without the proper systems necessary to achieve both.
International patent prosecution has historically been complex and costly. Countries having a patent office have their own unique laws, rules and regulations that can be difficult to understand and are constantly changing. As such, it can be difficult for those not practicing in a country to understand the attorney services and the cost structure associated with these services. Moreover, patent attorneys are judged within their law firms by the amount of billings they generate and therefore have traditionally had little incentive to aid their clients in understanding the tasks they perform or the cost structure associated with such tasks.
International applicants desire coordinated prosecution of related international patent applications, including international claim strategies, to ensure consistent claims in all countries. This coordination is typically done by a “controlling agent” such as the agent that prepared the application, a “drafting agent”, and/or an agent that works for the applicant, an “in-house agent”. Such coordinated prosecution is difficult to manage and expensive when an application is filed in multiple countries, in multiple languages. A large amount of correspondence is required and translation of such correspondence is often required, causing international prosecution to be expensive and confusing at times.
In addition, during international prosecution there are numerous intellectual property or “IP” prosecution tasks that occur over an extended period of time in each country, making it difficult for the controlling agent to determine whether each task is a technical task to be handled by IP professionals or an administrative task that can be handled by paraprofessionals or IP associates at much lower rates. As such, it is almost impossible to determine the cost structure of all such tasks around the world and effectively manage them. Some administrative IP tasks have been identified and handled by legal process outsourcing agencies, e.g., annuity payments, translation and foreign filing. With the advent of the patent prosecution highway or “PPH”, it is now possible for some patent applications to be granted by a patent office in one country based upon a patent office in another country granting substantially similar claims in a related application. As such, more and more international prosecution tasks are becoming administrative in nature, capable of being handled by paraprofessionals and associates at much lower rates.
To date, existing systems for managing intellectual property have focused on managing technical agents to perform administrative tasks. Inevitably, these systems fail to properly manage cost for a variety of reasons. First, multiple technical agents residing in multiple countries do not have the interactive capability or incentive to provide seamless efficient intellectual property services at a low cost. Second, legal process outsourcing companies, like patent translation companies, who do provide administrative legal services at administrative rates, are only focused on a single administrative task in the life cycle of an intellectual property asset. As such, technical agents can charge for “new” services being provided immediately before or after the administrative task being performed by the legal process outsourcing company. This can quickly eliminate any savings provided by the legal process outsourcing company. For example, a translation company may provide translations at a lower rate than technical agents, however, if an agent loses its translation work to a translation company, the agent will often begin to charge for new services described as “sending documents to the translation company” or “checking the translation provided by the translation company”. Moreover, e-billing systems gather data on such intellectual property costs for analysis by in-house counsel, but do not provide a system for preventing such new charges, nor do they provide a system for efficiently utilizing administrative agents for administrative tasks and technical agents for technical tasks.
The system of the present invention introduces a completely new concept in the management of intellectual property over its life cycle. Rather than attempting to manage technical agents to perform administrative tasks, or using a legal process outsourcing company for a single administrative task in the life cycle, a system is provided that breaks down and identifies all tasks in the intellectual property life cycle as administrative tasks or technical tasks. The system then provides a user with a choice of using an administrative agent for administrative tasks or a technical agent for technical tasks throughout the entire intellectual property life cycle. In other words, the present invention allows a single controlling agent familiar with the invention to manage the prosecution of multiple related international patent applications without employing expensive technically qualified agents for all tasks.
Various process circuitries in the system are utilized to perform tasks which may include docketing, generating automated instructions for such tasks, tracking the progress of tasks to ensure timely completion, generating automated reports and reminders relating to tasks, assisting with the completions of certain tasks and/or paying the agents for tasks completed by both administrative and technically qualified agents. In the system, low fixed charges can be established for repetitive administrative tasks, and budgets or fixed fees can be established for technical tasks requiring a technically qualified agent.
With the assistance of the system of the present invention, a controlling agent who is not familiar with the nature of all tasks in the international IP prosecution life cycle and the costs associated therewith can control such costs by controlling the agents performing each task and/or their charges associated with such tasks. The system provides the controlling agent with a choice of instructing a separate administrative agent to handle an administrative task at a lower cost and the controlling agent can also instruct another more technically qualified agent to perform technical tasks.
As such, less expensive administrative agents can be used for non-technical work, such as filing the application, reporting correspondence, requesting exam, filing a PPH request, correcting formalities, paying a grant fee, proofreading, paying an annuity fee, recording assignments, filing paperwork, etc., while technically qualified agents can be used for more expensive technical work, such as analyzing the prior art in a search report and responding to office actions with rejections based upon prior art. If technical work is required by a technically qualified agent, a budget can be included in the system and incorporated into an instruction from the controlling agent.
These and other aspects, objects, and features of the present invention will be understood and appreciated by those skilled in the art upon studying the following specification, claims, and appended drawings.